America-Israel Patent Lawtag:typepad.com,2003:weblog-18362352017-03-23T11:03:32+02:00Information and insights into US and Israel patent law and practice, particularly in pharma and life sciencesTypePadDilbert Just Demonstrated Conception, Reduction To Practice, And Patent Ignorance Among The Masses (We Need To Do A Better Job Educating The Public About Patents!)tag:typepad.com,2003:post-6a0112793f1c9d28a401b8d26dc2f1970c2017-03-23T11:03:32+02:002017-03-23T14:59:08+02:00I don’t think any readers of this blog have been living in a cave for the last 25+ years, but if you have, one of the most popular comic strips in the USA is Dilbert, written by Scott Adams. The strip usually depicts life (if it can be called that)...Daniel Feigelson

I don’t think any readers of this blog have been living in a cave for the last 25+ years, but if you have, one of the most popular comic strips in the USA is Dilbert, written by Scott Adams. The strip usually depicts life (if it can be called that) as a software engineer in a large company.

This week, one of the characters – ok, THE laziest character – Wally, says something that results in a product that makes lots of money for the company and a likely promotion for Wally. You can see the strips here, here, here and here.

Being a patent attorney, I couldn’t but help find interesting (after my laughter subsided) the fact that Wally gets credit for inventing something, even though it’s clear that it was Dilbert who came up with the idea (conception), and built the prototype (actual reduction to practice). Legally, the fact that it was Wally’s comments that inspired Dilbert are of no import: it was Dilbert who saw how two “problems” could in fact be mutual solutions for each other, and who conceived of a way to implement those mutual solutions. So Dilbert is the inventor here, and Wally isn’t. But from the get-go, Dilbert gives Wally credit, which Wally is more than happy to take.

That the strip would play out this way suggests that for all his brilliance as a comic strip writer, and, presumably, as someone who knows something about copyright (Mr. Adams has a very nice sized bank account thanks to syndication and royalties from the Dilbert strip and related books, mugs, etc.; the Dilbert site itself allows you to buy rights to reproduce individual comic strips in certain contexts), Mr. Adams has a poorer understanding of patent law. Or maybe, giving him the benefit of the doubt, he just understands common misperceptions about patent law, and puts those misperceptions into Dilbert’s world. Either way, it’s clear that people who live with inventors and patents day in and day out could be doing a better job teaching people not involved in this area how patents work and why they’re important.

Since the Dilbert strip can’t leave us hanging with the possibility of a promotion for Wally, there’s going to be at least one more installment in this story, and I envision two possible outcomes. One is that the company gets hit with a product liability suit and drops the product. The other is that the company didn’t bother filing a patent application and gets driven from the market by a cheap knock-off from Elbonia. One way or another, Wally’s promotion vaporizes.

The Demise of SAWS: PTO Admits No Wrong, And You Still Can’t Connect The Dotstag:typepad.com,2003:post-6a0112793f1c9d28a401b7c757f8d4970b2015-03-03T09:59:11+02:002015-03-03T14:20:16+02:00A few months ago, a story broke about a secret program at the USPTO, the “Sensitive Application Warning System”. The upshot was that the USPTO had a program under which patent applications could, unbeknownst to the applicant, be flagged for heightened scrutiny, leading to delays in prosecution. The reasons for...Daniel Feigelson

A few months ago, a story broke about a secret program at the USPTO, the “Sensitive Application Warning System”. The upshot was that the USPTO had a program under which patent applications could, unbeknownst to the applicant, be flagged for heightened scrutiny, leading to delays in prosecution. The reasons for such flagging of the application were diverse, including reasons like issuance of the patent might cause embarrassment to the PTO. Remember the patent on “Method of Exercising a Cat”?

After being both criticized (think IRS and Lois Lerner) and ridiculed, as well as being subjected to a Freedom of Information Act request from Dennis Crouch at Patentlyo, yesterday the USPTO relented. See the announcement here.

I think we’re all glad to see SAWS going by the wayside. But would it have been so hard for the PTO to show just a modicum of contrition in announcing SAWS' demise? The announcement makes it sound like the program is being discontinued because it's now obsolete, with no acknowledgement that maybe, just maybe, the PTO was out of line in having a secret program, even back in the days before early publication of patent applications.

There's another aspect of the announcement that I found slightly off-putting, but maybe I'm overly sensitive about this topic. From the announcement:

"And today, unlike when the SAWS program was created, most applications are published eighteen months after submission, exposing them to public scrutiny and the potential for third-party submissions of prior art."

That statement is technically correct but, to the extent that it implies that third parties can now be watchdogs over the prosecution process, a bit misleading:

When the American Inventors Protection Act was adopted in 1999, facilitating 18-month publication, it included a caveat (codified as 35 USC 122(c)) that the Director "shall establish appropriate procedures to ensure that no protest or other form of pre-issuance opposition to the grant of a patent on an application may be initiated after publication of the application without the express written consent of the applicant." It also fixed a narrow time window (in 35 USC §122(e)) for third parties to submit printed prior art. The idea was to keep the PTO from being inundated with third-party prior art submissions. Because, you know, over at the EPO, they were just swamped with those third-party submissions, to the point that the EPO couldn't function. (Wait, they weren't? How 'bout that!)

When the obscenely misnamed “America Invents Act” was enacted in 2011, it created a mechanism for third party submission of prior art - see 35 USC §301 - but kept the language of 35 USC §122 quoted above. There's an obvious tension between these two statutory provisions, the one trying to limit the window in which prior art publications can be submitted and forbidding pre-issuance protests or oppositions, the other intending to facilitate prior art submissions, including statements regarding the relevance of the prior art to the claims.

This tension forced the USPTO into Wise Men of Chelm mode, leading to what I call the USPTO's "You-can-lead-a-horse-to water-but-you-can't-make-him-drink" approach to third-party prior art submissions: you can now provide the PTO with a prior art publication under section §301, outside the time frame listed in §122(e), and you can explain why it's relevant to a particular claim or claims. But if you include the phrase "and therefore what is claimed in claim X lacks novelty/is obvious" or a variation thereof, the PTO will bounce your section §301 submission because it contravenes §122(c).

The inability to connect all the dots for the USPTO in these §301 requests is a weakness in the system. True, there are now several types of post-grant proceedings available, and they do allow third parties to make substantive arguments about the non-patentability of particular claims in view of particular prior art publications, but those proceedings are expensive. If the claims aren’t allowable to begin with, it would be most efficient for the USPTO to never issue those claims in the first place. Third party prior submissions, including explanation and arguments, can assist in that process. (If you’re concerned about abuse of the system, there are solutions, for example limiting the number of bites at the apple, or restricting the temporal window in which such submissions may be made.)

So yes, the dead-SAWS announcement is correct that nowadays third parties can submit printed prior art, or even statements of the applicant made in a Federal Court or before the PTO. That’s an advance over the situation that prevailed when SAWS was supposedly initiated in 1994. But it’s not the case that those third parties can provide the PTO with what they believe to be the conclusions to be drawn from that prior art with respect to the claims at issue. Repeal of 35 USC §122(c) would seem to be necessary to enable that step. And given the rate at which USPTO examiners ignore the publications found in PCT searches, it’s clear that it will take a change in the examination culture at the USPTO for examiners en masse to utilize prior art publications found by others.

A Partial Answer To A Common Question: Why Is There So Much Innovation Coming Out of Israel?tag:typepad.com,2003:post-6a0112793f1c9d28a401a73df3f723970d2014-07-25T07:34:49+03:002014-07-25T07:34:49+03:00One question I repeatedly hear from non-Israelis is, Why is there so much innovation coming out of Israel? It’s a question that a number of people have tried to answer, and even gave rise to a book, “Start-Up Nation”. I think the current missile attacks from Gaza, and how those...Daniel Feigelson

One question I repeatedly hear from non-Israelis is, Why is there so much innovation coming out of Israel? It’s a question that a number of people have tried to answer, and even gave rise to a book, “Start-Up Nation”. I think the current missile attacks from Gaza, and how those have been parried, provide a good illustration of at least part of the answer.

In 1991, during the Gulf War, Saddam Hussein launched 42 Scud missiles at Israel, i.e. about one a day for the duration of the war. Despite being fired from several hundred miles away, thus providing several minutes’ lead time to determine when and where a missile would hit, each time a Scud was fired, warning sirens went off all over the country. US-built Patriot missile batteries were deployed in Israel, but their success rate in intercepting incoming Scuds was abysmal.

Flash forward to today. In the past month, Hamas has fired over 1000 missiles into Israel, from right on the border, not far-off Iraq, leaving far more less time to respond to a much larger barrage than was faced in 1991. Within seconds after launch, the fact that it’s a missile (and not something else) and its trajectory are known, and the population in the neighborhood where the missile will land is warned (via air raid sirens, television and radio notices, and a smartphone app); there are no sirens in nearby towns. According this July 13 Times of Israel article, the country is presently divided into 235 sectors for this purpose, and in the future that number is likely to double.

The warning system itself constitutes a major accomplishment, but then comes the truly amazing part: in cases where missiles are calculated to hit populated areas, an interceptor missile is launched. (If you’re my age, think back to Atari Missile Command, except this system is real.) And unlike the Gulf War-era Patriot missiles, today’s Iron Dome missile system, developed here in Israel, has been remarkably effective in blowing Hamas’ weaponry out of the sky, even as it travels at supersonic speeds. No one else has developed anything close.

Of course, technology developed for military purposes eventually finds its way into civilian applications. More importantly, when the kind of brainpower that went into developing the Iron Dome is turned to other areas, you get innovative solutions to many problems.

Solvay v Honeywell: Even in the World's Only First-To-Invent Jurisdiction, You Don't Have to be First to Inventtag:typepad.com,2003:post-6a0112793f1c9d28a40133f5175692970b2010-10-15T15:54:29+02:002010-10-15T15:54:29+02:00I usually leave it to other blogs to comment on recent U.S. court decisions. However, I thought that CAFC’s decision in Solvay v Honeywell International earlier this week nicely highlights some of the differences between U.S. and Israel patent practice, as well as at least one idiosyncrasy of U.S. patent...Daniel Feigelson

I usually leave it to other blogs to comment on recent U.S. court decisions. However, I thought that CAFC’s decision in Solvay v Honeywell International earlier this week nicely highlights some of the differences between U.S. and Israel patent practice, as well as at least one idiosyncrasy of U.S. patent law.

Solvay’s US 6,730,817 has an earliest priority date of October 23, 1995. The patent claims a process for making 1,1,1,3,3-pentafluoropropane (HFC-245fa). In 1994, Honeywell’s predecessor-in-interest, Allied Signal, entered into a research agreement with a Russian research center to develop a process for making this same compound. Research results from Russia were sent to Allied Signal in the USA in July 1994, in a report that both sides agreed disclosed the invention claimed by Solvay. In 1995, prior to Solvay’s priority date, Honeywell personnel in the USA repeated the Russian experiments, and throughout 1995 and 1996 continued to develop improvements to the Russian process (which eventually led to the issuance of a patent for Honeywell, although Honeywell’s patent was filed after Solvay’s).

Honeywell eventually began to practice its process in the USA, and Solvay sued for infringement. Given the facts above, one would think that Honeywell had an iron-clad invalidity defense: 35 U.S.C. §102(a) says in pertinent part that, “A person shall be entitled to a patent unless: (a) the invention was known or used by others in this country . . . before the invention thereof by the applicant for patent”. The Russian research report which disclosed the invention was in the possession of Allied Signal employees well before Solvay’s priority date, and those employees also practiced the invention in the USA before that date. That would seem to constitute knowledge or use in the USA (or both) by someone other than Allied Signal before Allied Signal invented its process.

Unfortunately for Honeywell, until the filing of its own patent application on its improved version of the Russian-developed process, Allied Signal had kept its knowledge and use secret. It is well-established caselaw that the “known or used” clause of §102(a) means public knowledge or use. See e.g. Rosaire v. Baroid Sales Division, National Lead Co., 218 F.2d 72 (5th Circuit 1955). Consequently, Honeywell couldn’t bring a defense under §102(a).

Lacking recourse to §102(a), Honeywell turned to 35 U.S.C. §102(g)(2), which states that a person is not entitled to a patent if “before the applicant’s invention thereof the invention was made in this country by another inventor who had not abandoned, suppressed or concealed it.” Honeywell argued that by practicing the Russian invention before Solvay’s priority date, Honeywell qualified as “another inventor” for purposes of §102(g)(2). (Prior to 1999, the statute read “the invention was made in this country by another . . . .”; as noted in footnote 3 of the Solvay decision, in Dow Chemical Co. v. Astro-Valcour, Inc., 267 F.3d 1334 (Fed. Cir. 2001), the CAFC held that, under both the pre-1999 version of § 102(g)(2) and the current version of the statute . . . it must be shown that an “inventor” made the claimed invention in order to establish a first-inventor defense.)

The CAFC rejected this assertion: as it was the Russian scientists and engineers, not Allied Signal’s, who had conceived of the invention practiced by Allied Signal in 1995, Allied Signal’s employees were not inventors for purposes of §102(g)(2).

As a result, Honeywell was unable to invalidate the ‘817 patent on grounds of prior use.

Sitting in Rehovot, there are two aspects of this case that strike me as interesting. The first is that under the same fact pattern in Israel, the patent may have been invalidated for lack of novelty, and even if not, Honeywell likely would still have had a prior use defense. In terms of validity, public use of a claimed invention anywhere in the world (not just in Israel) before an applicant/patentee’s priority date is a bar to patentability in Israel. Clearly the question of whether or not the practice of the invention, in both Russia and the U.S.A., constituted a prior public use under Israel law, would have been litigated, and I won’t speculate on how a court here would rule. But even if the patent wasn’t invalidated on those grounds, section 53 of the patent statute creates prior user rights:

53. Right by virtue of prior exploitation

Whoever on the determinative date was exploiting in good faith in Israel the invention for which a patent is requested, or who on that date made in good faith substantial preparations for its exploitation, is entitled to exploit the same invention himself and in the course of his business [operations] without consideration; for purposes of this matter, “the determinative date” [means] the date on which the patent application was applied for in Israel, and if a [Paris Convention] priority claim is made for that application under section 10 [of the statute], the date on which the priority application was filed.

On the priority date, Allied Signal had both practiced the invention and was making substantial preparations for its exploitation. Allied Signal would therefore presumably have benefited from section 53. Section 54 says that the rights under section 53 may only be transferred along with the business that uses the invention; as Honeywell took over Allied Signal’s HFC-245fa production business, presumably Honeywell would have been lawfully entitled to Allied Signal’s prior user rights in Israel.

The second point is that it is somewhat ironic that in the United States, for purposes of novelty-defeating prior use under §102(a), the prior use must be public, whereas under §102(e) the filing of a patent application can defeat both the novelty and the non-obvious of a later-filed application, even if the earlier application was not published at the time of the later filing. See e.g. In re Giacomini. Put differently, to be effective prior art in the U.S.A., prior use must be public, unless it has the hechsher of an earlier-filed U.S. patent application. Thus, had Allied-Signal applied for a patent in July 1995 – a time at which U.S. patent applications remained secret until their grant, and not long after provisional patent applications became an option – on the Russian process, then this application would have been invalidating “secret” prior art to Solvay’s patent application, and Honeywell would never have had to contend with Solvay’s patent.

Correction of Inventorship in the USA: Courts Can Only Entertain Suits To Correct Inventorship In Issued Patents, Not Pending Applicationstag:typepad.com,2003:post-6a0112793f1c9d28a40133ec8be790970b2010-04-08T17:50:37+03:002010-04-08T17:50:37+03:00In the USA, the inventors of an invention claimed in a patent must be correctly identified. See 35 U.S.C. §101, §115 and §116. Failure to correctly list the inventors can result in the patent being invalid or unenforceable, although if the mistaken inclusion or omission of an inventor occurred without...Daniel Feigelson
<div xmlns="http://www.w3.org/1999/xhtml"><font size="3">
<p class="MsoNormal" style="MARGIN: 0in 0in 0pt; DIRECTION: ltr; unicode-bidi: embed; TEXT-ALIGN: left"><span style="FONT-SIZE: 11pt; FONT-FAMILY: Garamond; mso-bidi-font-size: 10.0pt">In the USA, the inventors of an invention claimed in a patent must be correctly identified.<span style="mso-spacerun: yes">&#0160; </span>See 35 U.S.C. </span><span style="FONT-SIZE: 11pt; FONT-FAMILY: Garamond; mso-bidi-font-size: 10.0pt; mso-bidi-font-family: &#39;Times New Roman&#39;"><a href="http://www.uspto.gov/web/offices/pac/mpep/documents/appxl_35_U_S_C_101.htm#usc35s101"><font color="#800080">§<span style="mso-bidi-font-family: Miriam">101</span></font></a></span><span style="FONT-SIZE: 11pt; FONT-FAMILY: Garamond; mso-bidi-font-size: 10.0pt">,</span><span style="FONT-SIZE: 11pt; FONT-FAMILY: Garamond; mso-bidi-font-size: 10.0pt; mso-bidi-font-family: &#39;Times New Roman&#39;"> <a href="http://www.uspto.gov/web/offices/pac/mpep/documents/appxl_35_U_S_C_115.htm#usc35s115"><font color="#800080">§<span style="mso-bidi-font-family: Miriam">115</span></font></a></span><span style="FONT-SIZE: 11pt; FONT-FAMILY: Garamond; mso-bidi-font-size: 10.0pt"> and </span><span style="FONT-SIZE: 11pt; FONT-FAMILY: Garamond; mso-bidi-font-size: 10.0pt; mso-bidi-font-family: &#39;Times New Roman&#39;"><a href="http://www.uspto.gov/web/offices/pac/mpep/documents/appxl_35_U_S_C_116.htm#usc35s116"><font color="#800080">§<span style="mso-bidi-font-family: Miriam">116</span></font></a></span><span style="FONT-SIZE: 11pt; FONT-FAMILY: Garamond; mso-bidi-font-size: 10.0pt">.<span style="mso-spacerun: yes">&#0160;&#0160; </span>Failure to correctly list the inventors can result in the patent being invalid or unenforceable, although if the mistaken inclusion or omission of an inventor occurred without deceptive intent on the part of the included or omitted inventor, the inventorship listing may be corrected by the USPTO or the court, and the patent won’t be invalid.<span style="mso-spacerun: yes">&#0160; </span>See 35 U.S.C. </span><span style="FONT-SIZE: 11pt; FONT-FAMILY: Garamond; mso-bidi-font-size: 10.0pt; mso-bidi-font-family: &#39;Times New Roman&#39;"><a href="http://www.uspto.gov/web/offices/pac/mpep/documents/appxl_35_U_S_C_256.htm#usc35s256"><font color="#800080">§<span style="mso-bidi-font-family: Miriam">256</span></font></a></span><span style="FONT-SIZE: 11pt; FONT-FAMILY: Garamond; mso-bidi-font-size: 10.0pt">.<span style="mso-spacerun: yes">&#0160;&#0160; </span><o:p></o:p></span></p>
<p class="MsoNormal" style="MARGIN: 0in 0in 0pt; DIRECTION: ltr; unicode-bidi: embed; TEXT-ALIGN: left"><span style="FONT-SIZE: 11pt; FONT-FAMILY: Garamond; mso-bidi-font-size: 10.0pt">&#0160;<o:p></o:p></span></p>
<p class="MsoNormal" style="MARGIN: 0in 0in 0pt; DIRECTION: ltr; unicode-bidi: embed; TEXT-ALIGN: left"><span style="FONT-SIZE: 11pt; FONT-FAMILY: Garamond; mso-bidi-font-size: 10.0pt">Given the importance placed by the statute on correct inventorship listings, you’d think U.S. law would make it easy for a party that thinks it has been erroneously – or deliberately – omitted from a patent application to have the matter corrected, but that’s not the case.<span style="mso-spacerun: yes">&#0160; </span>If the application is still pending, an aggrieved omitted inventor can in certain circumstances invoke an interference, a judicial proceeding conducted before the USPTO in which priority of inventorship is determined.<span style="mso-spacerun: yes">&#0160; </span>But it’s not always possible to invoke an interference.<span style="mso-spacerun: yes">&#0160; </span>What’s a poor omitted inventor to do?<o:p></o:p></span></p>
<p class="MsoNormal" style="MARGIN: 0in 0in 0pt; DIRECTION: ltr; unicode-bidi: embed; TEXT-ALIGN: left"><span style="FONT-SIZE: 11pt; FONT-FAMILY: Garamond; mso-bidi-font-size: 10.0pt">&#0160;<o:p></o:p></span></p>
<p class="MsoNormal" style="MARGIN: 0in 0in 0pt; DIRECTION: ltr; unicode-bidi: embed; TEXT-ALIGN: left"><span style="FONT-SIZE: 11pt; FONT-FAMILY: Garamond; mso-bidi-font-size: 10.0pt"><span style="FONT-SIZE: 11pt; FONT-FAMILY: Garamond; mso-bidi-font-size: 10.0pt; mso-bidi-font-family: Miriam; mso-fareast-font-family: &#39;Times New Roman&#39;; mso-fareast-language: HE; mso-ansi-language: EN-US; mso-bidi-language: HE">This was the situation facing two Korean university researchers, Jong-Wan Park and Yang-Sook Chun.<span style="mso-spacerun: yes">&#0160; </span>The two suspected that a particular chemical compound, called YC-1, inhibits the activity of a particular protein complex, HIF-1, and therefore could be used to prevent the growth of blood vessels that supply fast-growing tumors.<span style="mso-spacerun: yes">&#0160; </span>Between 1999 and 2002, the two conducted experiments that confirmed their hypothesis.<span style="mso-spacerun: yes">&#0160; </span></span><span style="FONT-SIZE: 11pt; FONT-FAMILY: Garamond; mso-bidi-font-size: 10.0pt; mso-bidi-font-family: Miriam; mso-fareast-font-family: &#39;Times New Roman&#39;; mso-fareast-language: EN-US; mso-ansi-language: EN-US; mso-bidi-language: HE">On April 7, 2003, they filed a US patent application which “disclos[ed] their anti-angiogenic, anti-cancer application of YC-1.”</span></span><span style="FONT-SIZE: 11pt; FONT-FAMILY: Garamond; mso-bidi-font-size: 10.0pt"><span style="mso-spacerun: yes">&#0160; </span><o:p></o:p></span></p>
<p class="MsoNormal" style="MARGIN: 0in 0in 0pt; DIRECTION: ltr; unicode-bidi: embed; TEXT-ALIGN: left"><span style="FONT-SIZE: 11pt; FONT-FAMILY: Garamond; mso-bidi-font-size: 10.0pt">&#0160;<o:p></o:p></span></p>
<p class="MsoNormal" style="MARGIN: 0in 0in 0pt; DIRECTION: ltr; unicode-bidi: embed; TEXT-ALIGN: left"><span style="FONT-SIZE: 11pt; FONT-FAMILY: Garamond; mso-bidi-font-size: 10.0pt">As is common in university collaborations, the YC-1 used by Park and Chun was obtained from another researcher, Che-Ming Teng, who had experience in producing the compound; also as is common in such collaborations, the researchers shared their results and pre-publications with Teng.<span style="mso-spacerun: yes">&#0160; </span>Teng, however, took those results to a Taiwanese drug company, which without Park or Chun’s knowledge filed a U.S. provisional application on March 29, 2002 and then in March 2003 filed a PCT application claiming priority from the provisional.<span style="mso-spacerun: yes">&#0160; </span>The patent applications identified Teng and the president of the drug company as the inventors.<span style="mso-spacerun: yes">&#0160; </span><o:p></o:p></span></p>
<p class="MsoNormal" style="MARGIN: 0in 0in 0pt; DIRECTION: ltr; unicode-bidi: embed; TEXT-ALIGN: left"><span style="FONT-SIZE: 11pt; FONT-FAMILY: Garamond; mso-bidi-font-size: 10.0pt"></span>&#0160;</p>
<p class="MsoNormal" style="MARGIN: 0in 0in 0pt; DIRECTION: ltr; unicode-bidi: embed; TEXT-ALIGN: left"><span style="FONT-SIZE: 11pt; FONT-FAMILY: Garamond; mso-bidi-font-size: 10.0pt"><a href="http://djf.typepad.com/.a/6a0112793f1c9d28a40133ec8be5e2970b-pi" style="FLOAT: left"><img alt="Thief" class="asset asset-image at-xid-6a0112793f1c9d28a40133ec8be5e2970b " src="http://djf.typepad.com/.a/6a0112793f1c9d28a40133ec8be5e2970b-120wi" style="MARGIN: 0px 5px 5px 0px" /></a> After learning of the filings, Park, Chun and their assignees filed suit in Los Angeles Superior Court (which eventually removed the case to Federal District Court for the Central District of California) against Teng et al., seeking among other things to have the inventorship in Teng’s pending application corrected to reflect the true inventorship.<span style="mso-spacerun: yes">&#0160; </span>After an odyssey that included a trip up to the <a href="http://www.law.cornell.edu/supct/html/07-1437.ZS.html"><font color="#800080">Supreme Court</font></a>, last week the CAFC weighed in on remand, and <a href="http://www.cafc.uscourts.gov/opinions/06-1522.pdf"><font color="#800080">ruled</font></a> that while the question of inventorship is one that arises under the patent laws, and therefore is within the exclusive province of the federal courts, here the plaintiffs had no cause of action, because the statute only provides for a court to correct inventorship <em>after a patent has issued</em>.<span style="mso-spacerun: yes">&#0160; </span>35 U.S.C. </span><span style="FONT-SIZE: 11pt; FONT-FAMILY: Garamond; mso-bidi-font-size: 10.0pt; mso-bidi-font-family: &#39;Times New Roman&#39;"><a href="http://www.uspto.gov/web/offices/pac/mpep/documents/appxl_35_U_S_C_116.htm#usc35s116"><font color="#800080">§<span style="mso-bidi-font-family: Miriam">116</span></font></a>, said the CAFC, does not create a private cause of action for correction of inventorship in a pending patent application.<span style="mso-spacerun: yes">&#0160; </span></span><span style="FONT-SIZE: 11pt; FONT-FAMILY: Garamond; mso-bidi-font-size: 10.0pt"><span style="mso-spacerun: yes">&#0160;</span>“</span><span style="FONT-SIZE: 11pt; FONT-FAMILY: Garamond; mso-bidi-font-size: 10.0pt; mso-bidi-font-family: &#39;Times New Roman&#39;; mso-fareast-language: EN-US">While the question of who invented an invention disclosed in pending patent applications is a question of federal patent law, Congress, through §§ 116 and 135(a), has limited the avenues by which such inventorship can be contested</span><span style="FONT-SIZE: 11pt; FONT-FAMILY: Garamond; mso-bidi-font-size: 10.0pt">”.<span style="mso-spacerun: yes">&#0160; </span>In short, if someone else stole your invention and filed before you did, you can get your day in court – but only after the patent has already issued.<o:p></o:p></span></p>
<p class="MsoNormal" style="MARGIN: 0in 0in 0pt; DIRECTION: ltr; unicode-bidi: embed; TEXT-ALIGN: left"><span style="FONT-SIZE: 11pt; FONT-FAMILY: Garamond; mso-bidi-font-size: 10.0pt"><o:p></o:p></span></p>
<p><span style="FONT-SIZE: 11pt; FONT-FAMILY: Garamond; mso-bidi-font-size: 10.0pt; mso-bidi-font-family: Miriam; mso-fareast-font-family: &#39;Times New Roman&#39;; mso-fareast-language: HE; mso-ansi-language: EN-US; mso-bidi-language: HE">It can be argued that there’s a certain amount of sense in this arrangement: inventorship is assessed on a claim-by-claim basis, so until some claims have been granted, it’s premature for the courts to get involved in inventorship disputes (just as courts don’t issue advisory opinions).<span style="mso-spacerun: yes">&#0160; </span>The counter to that argument is that interferences by definition involve at least one pending patent application; but then interferences are conducted by the USPTO, not the courts.<span style="mso-spacerun: yes">&#0160; </span>What is clear is that if you’re an inventor who’s been wronged like Park and Chun, it’s frustrating to have the door to the PTO locked (unless you happened to file an application early enough to be able to invoke an interference), and to have to wait for the grant of a patent to have the issue resolved before the courts.</span></p></font></div>